Infringement Flashcards
What does S9(1) of the TMA 1994 say?
Rights conferred by registered trademark:
The proprietor of a registered trademark has exclusive right in the trademark which are infringed by use of the trademark in the United Kingdom without his consent
What does S10(1) of the TMA 1994 say?
Double Identity:
A person infringes a registered trademark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical to with those for which it is registered
What does S10(2) of the TMA 1994 say?
Likelihood of confusion:
A person infringes a registered trade mark if he uses in the course of trade a sign where because:
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered;
there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the trade mark.
What does S10(3) of the TMA 1994 say?
Marks with a reputation:
A person infringes a registered trade mark if he uses in the course of trade in relation to goods or services a sign which:
is identical with or similar to the trade mark where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
What are the 4 requirements for infringement as laid out in S9(1) of the TMA 1994?
There must be: Use in the course of trade... Without the proprietor's consent... Use of the senior mark in the territory... Use in relation to goods or services.
What are the three types of infringement?
Double identity
Likelihood of confusion
Marks with a reputation
What does S10(4) of the TMA 1994 say?
For the purposes of this section, a person uses a sign if, in particular, he:
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;
(c) imports or exports goods under the sign;
(d) uses the sign on business papers or in advertising; or
(e) uses the sign in comparative advertising in a way which is contrary to the Business protection from Misleading Marketing Regulation 2008
What were the key findings from Google France, C-236/08?
Relevant for distinguishing between direct (which presupposes a direct and positive involvement) and indirect liability:
Selling trade marks as keywords does not amount to such use
Creating the technical conditions necessary for the use of a sign as an AdWord and being paid for it does not amount to such use
Requires at least use in one’s own commercial communications
Essential function of a trade mark is not impaired when the advertisement does not enable an average user or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically linked, or, on the contrary from a third party.
What were the key findings from Frisdranken v Red Bull, C-119/10?
Winters filled cans of allegedly infringing products on behalf of the alleged infringer.
Creating the technical conditions necessary for the use of a sign (as an AdWord) and being paid for it does not amount to such a use
What were the key findings from L’Oreal v Ebay, C-324/09
The operator of an online marketplace does not “use” signs appearing on its website when customers sell goods bearing the mark.
The traders “using” the online platform are actually using the mark.
The fact that an online marketplace is accessible from the territory does not necessarily mean that the mark is being used in that territory, it depends on where the target consumer is.
When the offer for sale is accompanied by details of the geographic areas to which the seller is willing to dispatch the product, that type of detail is of particular importance.
How has Article 9(4) extended the application of exclusive rights ?
Article 9(4) has extended the application of exclusive rights to goods transiting through the EU even if they will not be placed on the market in the EU. The aim being to prevent counterfeit goods moving through the EU.
What were the key findings from Cosmetic Warriors v Amazon?
When an online marketplace uses senior marks as keywords to promote goods sold through it’s online platform, then the online marketplace uses these marks.
e.g. lush soap at amazon.co.uk is infringement as Lush products are not available.
Large range of bath bombs would be allowable.
What were the key findings from Trebor Bassett Ltd v Football association, [1997] FSR 211?
Incidental, accidental or ephemeral use does not amount to use of a senior mark.
What were the key findings from Arsenal v Reed, C-206/01?
Use that takes place in the context of commercial activity with a view to economic advantage and not as a private matter constitutes use in the course of trade.
There was no passing of as there was no operative misrepresentation
Reed argued that there was no trademark infringement as the badge was simply used as badges of affiliation however the courts held that the trade mark function (i.e. as an indicator of commercial origin) was being impaired and that the context of use of the trade mark by Reed was irrelevant. Therefore there was infringement.
What were the key findings from Argos Lts v Argos Systems Inc [2018] EWCA Civ 2211?
The use of the domain name alongside ads was not enough to confer an unfair advantage to AS.
What were the key findings of Flowers Inc v Phonenames Ltd [2001] EWCA Civ 712?
Use of a TM on a website does not by itself constitute the use of that mark in any country from which the website could be accessed.
What were the key findings from Euromarket designs v Peters and Crate and Barrel Ltd [2001] FSR 288
Targeting is assessed objectively from the perspective of the average consumer in the UK and the defendant’s intent plays a role. Importantly, use in the territory must be interpreted in light of the other requirements i.e. use on the course of trade in relation to goods or services
Mere physical proximity between sign and goods may not make the use of the sign in relation to the goods, perception matters too. e.g. kodak film in a boots bag.
In relation to goods and services, a link must be made between the mark used and the goods/services offered by a third party. How may this link be proven?
Comparative advertising: distinguishing one’s own products by comparing characteristics.
Keyword advertising: distinguishing one’s own products as alternatives to the goods marketed by the trademark proprietor.
A link is not presumed to exist when a third party use an identical or similar mark to the senior trademark as a trade name.
Use of a trade mark as a trade name does not necessarily involve use of that mark in relation to goods/services within the meaning of s10 TMA 1994
What were the key findings from Holterhoff, C-2/00?
Given the high level of attention paid by retailers, there would by no confusion about the origins of the products, thus there was no infringement
What were the key findings from Adam Opel v Autec AG, C-48/05?
The outcome of the decision is dependent on consumer perception: will the mark be perceived as an indication of origin? will the consumer think that the replicas stem from an economically linked undertaking?
If yes, there is impairment of trade mark function.
What were the key findings from Portakabin Ltd and Portakabin BV v Primakabin BV C-588/08?
A sign is only identical with a trade mark when it reproduces, without any modification or addition, all the elements of the trade mark or where, viewed as a while it contains differences which are so insignificant that they may go unnoticed by the average consumer.
What were the key findings from Interflora v M&S, C-323/09?
Interflora alleged double identity against M&S.
Average consumer v substantial proportion of the public.
…we do not accept that a finding of infringement is precluded by a finding that many consumers would, of whom the average consumer is representative, would not be confused. To the contrary, if, having regard to the perceptions and expectations of the average consumer, the court concludes that a significant proportion of the relevant public is likely to be confused such as to warrant the intervention of the court, then we believe we may properly find infringement.
